Copyright Status restored to foreign works – removing works from public domain

Last week, The US Supreme Court mandated copyright restoration for foreign works that are covered by copyright protection in their country of origin or the country where copyright protection is claimed. This renewed respect for foreign works, removes a bulk of works out of the public domain and vests them with copyright protection. This means that many foreign works will no longer be free to perform, record, copy or make derivative works of here in the US. For example, Prokofiev’s ‘Peter and the Wolf’ which has been free to use in the US since it has been in the public domain, has had its copyright restored and will require the same permissions and usage fees as Copland and Bernstein…. who are Prokofiev’s contemporaries and who still enjoy copyright protection of their music. (Now an orchestra could be expected to pay approximately $800 per performance of Peter and the Wolf). Evidently, J.R.R. Tolkien’s writings, Alfred Hitchcock’s films and Pablo Picasso’s paintings are also among the foreign works with newly restored copyright protection.

The reasoning behind this copyright restoration is largely based on international foreign policy. As the court points out in its holding… the US has taken a ‘minimalistic approach’ to complying with the Berne Convention for the past two decades… and this copyright restoration of foreign works is a significant step toward US compliance with the treaty. There are 164 counties signed onto the treaty and the one of the many terms of the Berne Convention is that member states offer reciprocal copyright protection. Interestingly, this could be a significant step towards an international copyright system.

If you are already using ‘Peter and the Wolf’ or other restored works, the court’s holding speaks to a grace period for parties who are currently using or exploiting the restored works and encourages negotiations to determine reasonable compensation.

(Tolkien’s heirs come to mind as the ‘Lord of the Rings’ movie extravaganza could lead to interesting negotiations if an agreement hasn’t already been made.)

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

More information: The US Supreme Court case is Golan v. Holder. The holding is also available at www.supremecourt.gov; The Berne Convention, Article 18 at http://www.wipo.int/treaties/en/ip/berne/; Other articles on the subject: http://www.nytimes.com; http://online.wsj.com; http://www.legalnewsline.com/news/234980-peter-and-the-wolf-must-be-paid; http://orchestralworks.blogspot.com/2008/09/prokofiev-peter-and-wolf.html

Fiat pays for use of Graffiti Mural “I ❤ the Bronx” …in their commercial

The exact amount that Chrysler has paid to TATS Cru, the Bronx based graffiti artist, for use of their mural in a Fiat commercial hasn’t been disclosed… although I applaud the two sides for coming to an agreement.

Is a Graffiti Mural protected by copyright?  YES, YES, YES!!  All it takes is ORIGINALITY to qualify for copyright protection… and in this instance there wasn’t any question about the mural being original.

Should Chrysler have known that the mural was protected by copyright?  YES, YES, YES!!  Because, there is a copyright notice painted into the lower right hand corner of the mural:  “©2010 TATS Cru” (I applaud TATS Cru for being diligent and including the copyright notice).  Even if there hadn’t been a copyright notice on the mural it still has copyright protection and Chrysler should have done some research.  The exact reason that Chrysler included the mural in their commercial (to give authenticity as to the commercial which features JLo in the Bronx singing about strength while driving through the neighborhood where she grew up) should have been a HUGE indicator that the mural is original and covered by copyright protection.  IT’S NO EXCUSE “not to know” a work is covered by copyright protection.  Using a copyright protected work without permission is copyright infringement – and ignoring a copyright notice on a work is even worse.  Both are illegal… and ignoring a copyright notice can triple the damages owed.

What do you do if your copyright is infringed?  In this case, TATS Cru reached out to Fiat/Chrysler via their lawyer and reached a settlement.  The exact amount that TATS Cru was paid hasn’t been disclosed, although both parties have announced that they are excited to be collaborating.  As part of the deal that was struck… a Fiat has been given to TATS Cru to paint and auction off to a charity of their choice.

I ❤ the Bronx, too!  A lot can be learned about the art of making a deal in the Bronx!

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

For more information: http://tatscru.net/commercial.  The mural is located at 1156 E. 165th St. in the Bronx.  Watch the commercial – http://www.youtube.com/watch?v=deNRiBQiQ3Q. http://wheels.blogs.nytimes.com/2011/11/28/in-the-bronx-a-collision-of-cars-celebrity-and-copyright/ ; http://latino.foxnews.com ; http://www.nypost.com

breathe easy… in any Hatha Yoga sequence

Following up on a post last month on a Hot Yoga Copyright Dispute… launched by Bikram Yoga to defend copyrights held in a sequence of 26 Hatha Yoga postures… The US Copyright Office has weighed in on the court proceedings and issued a letter stating that a Hatha Yoga sequence is NOT granted copyright as a work of choreography.

An excerpt from the Defendant’s legal document submitted to the US District Court in California, quoting correspondence from the US Copyright office:

“..[T]he Choudhury Yoga Sequence is legally invalid because the Copyright Office has determined that yoga is not protected as choreography. According to a December 7, 2011 letter to Defendants from Laura Lee Fischer, Acting Chief of the Performing Arts Division of the Copyright Office, the Copyright Office previously “took the position that although functional physical movements did not represent the type of authorship which Congress intended to be protected under the copyright law, [the Copyright Office] could register the selection and ordering of public domain exercises.” However, the Copyright Office recently reevaluated this position. “The Registration Program of the Copyright Office reviewed the legislative history relating to section l02(a) of the copyright law, and in conjunction with senior management, determined that exercises, including yoga exercises, do not constitute the subject matter that Congress intended to protect as choreography. Thus, we will not register such exercises (including yoga movements), whether described as exercises or as selection and ordering of movements.” [From page 10-11 of Defendant’s Answer to the Complaint dated 12/9/2011. In the case: Bikram’s Yoga College of India L.P. v. Yoga to the People, Inc., 11-cv-07998, U.S. District Court, Central District of California (Los Angeles).  click here for the court document ]

You can breathe easy… in any Hatha Yoga sequence of your choice. Although, it appears that this lawsuit is still alive and moving forward since there are other non-copyright elements in the case.

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

For more information: http://wp.me/p10nNq-fE on HOT YOGA dispute; http://www.dailybusinessreview.com/PubArticleDBR.jsp?id=1323647402672&slreturn=1; http://dockets.justia.com and http://www.yogatruth.org/

Which came first… the CHIKIN or the KALE? (Trademark Infringement Claim)

Would you confuse a dude wearing a T-shirt that says “EAT MORE KALE” with a Chick-fil-A product sold under the slogan “EAT MOR CHIKIN”?

…I’m guessing there is a 99.9% chance that you wouldn’t confuse the two.  (Ask any 3 year old… they NEVER confuse a leafy green or healthy snack of any kind, with a chicken nugget.)

Evaluating how likely you are to be confused as to the source of the products is a fundamental aspect of evaluating a trademark infringement claim.  In this EAT MORE KALE vs. EAT MOR CHIKIN trademark infringement claim, Chick-fil-A sent a cease and desist letter to Mr. Bo Muller-Moore who hand-prints and sells  “EAT MORE KALE” T-shirts.  The letter challenged the EAT MORE KALE mark by claiming that it is likely to cause consumer confusion and have a negative impact on the Chick-fil-A trademark.  (Chick-fil-A allegedly sells 537 sandwiches a minute under the EAT MOR CHICKIN mark.)

Since the likihood of consumer confusion is slim, in this case, Mr. Bo is challenging Chick-fil-A’s infringement claim… and doesn’t have any plans to cease and desist his T-shirt printing business.  (As of today… his website says he cannot fill any more orders for EAT MORE KALE shirts before Christmas.   It seems the media coverage of this dispute may have boosted Mr. Bo’s business.)

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

For more information: http://eatmorekale.com/ and http://www.nytimes.com article on 12/5/11 Chicken Chain Says Stop But T-Shirt Maker Balks and USPTO Serial No. 85412053 – “Eat More Kale”; USPTO Reg. No.  2197973, 2240326  – “Eat Mor Chikin”

Hot Yoga Copyright Dispute

Evidently Bikram Yoga is suing Yoga to the People (another Hatha Yoga establishment) for copying a sequence of 26 Hatha Yoga postures performed in a hot room (105 degrees) …claiming a violation US copyright law.

Is this Copyright Infringement? Could be if the postures or the “routine of postures” are original. (It is possible to obtain copyright protection for choreography.) Although proving that a sequence of Hatha Yoga postures is original could be a challenge; since, Hatha Yoga is an ancient spiritual tradition with roots in India.

Interestingly, over the last decade, the Indian government has launched aggressive ‘traditional knowledge’ campaigns seeking to recapture ancient traditional knowledge, including Yoga, Ayurveda, and Homoeopathy practices that have been granted intellectual property protection in other counties. For example, several patents have been revoked in the US and the EU for turmeric, basmati and neem tree extracts because the patents were for traditional uses that are mentioned in numerous ancient texts. (Patent and copyright protection are similar ~ they both require originality. Patent law requires “novelty” for legal protection and enforcement… and copyright law requires “originality.”)

It will be interesting to see how flexible the US courts and the Indian Government are with Bikram’s allegation of copyright ownership and infringement of the “Hot Yoga” sequence at issue.

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

For more information: 12/9/2011 UPDATE http://wp.me/p10nNq-fT from the US Copyright Office; India’s Traditional Knowledge Digital Library: http://www.tkdl.res.in/tkdl/langdefault/common/Abouttkdl.asp?GL=Eng; The WIPO Creative Heritage Project: http://www.wipo.int/freepublications/en/tk/934/wipo_pub_l934tch.pdf; and Bikram’s US Copyright registration numbers: TX0005259325, TX0006555860, TX0005624003, TX0000179160, TXu001323218, TX0005499662, TXu001022657, TXu000934417, PA0001053335

Works in the Public Domain are FREE to use

Music and other published works that are in the Public Domain are free to use; since, they are not under copyright protection and therefore do not require any permissions from the author (or former copyright owner) to be used. Works that are in the public domain are free for the taking, sampling, using, copying, reproducing, recording and distributing.

Typically, works in the Public Domain are very old works. For example, ancient published texts like the “Bhagavad Gita” (a pre-Christian, Sanskrit text) are in the public domain…. as well as “newer-old-works” like the Shaker song “Simple Gifts” (music and lyrics written in the United States in the mid 1800’s). The original text, music and lyrics of the works are in the public domain. However, newer translations or compositions based on the original works… as well as sound recordings and arrangement elements of these newer versions are likely covered by copyright protection…. and NOT in the public domain.

What works are in the public domain? Any work or musical score that was published in the United States before 1923 is in the public domain, due to expiration of copyright. Newer works can also be dedicated to the public domain and if a work failed to meet the requirements for copyright protection it will also be in the public domain. Generally, a case by case analysis should to be done on works published in 1923 or later to determine if they are in the public domain because, it’s not always obvious. [Would you have guessed that the Happy Birthday Song is still covered by copyright protection… and not in the public domain?]

Keep in mind that copyright duration and the timeline for works entering the public domain vary country by country.

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

See also: http://www.copyright.gov , http://copyright.cornell.edu/resources/publicdomain.cfm , http://creativecommons.org/publicdomain/

Copyright Law: Using quotes from someone else (including Cajun keychain sayings) in your song, blog, book or website

Did you know that it’s possible to buy a “Cajun in your pocket” keychain? …that plays spoken Cajun phrases? GOOD NEWS – you can buy the keychain and use the sayings without violating copyright! Even though the toy manufacturers have copyrights that include the sayings on the keychain… there is no copyright violation for using the sayings in your own song, book, blog or website because, the phrases are not original.

A federal court in Louisiana held that the phrases at issue (see below) were common Cajun phrases and therefore, when the rap artist Mystikal included the exact word arrangements in his hit “Shake Ya As*” he did not infringe the toy maker’s copyright. (One of the necessary elements of a copyright infringement claim is that the parts of a copyrighted work that are copied without authorization must be original.)

• “We gon pass a good time, yeah, cher”
• “You gotta suck da head on dem der crawfish”

Another aspect of evaluating whether copyright protected works were copied without authorization is proof of access to the copyrighted work and similarity of the works. Interestingly in this case, it was proven that Mystikal’s nephew had a “Cajun in your pocket” toy… which was how the artist had access to the copyrighted work prior to the creation of his song. (By the way, it was estimated that the rap song had sold over six million units worldwide by the fall of 2000 and had also appeared in several movies and numerous CD compilations.)

When quotes from copyright protected works can be used in songs, books, blogs or websites without permission of the copyright owner… is a grey area and the facts and circumstances are fundamental to the case by case evaluation of copyright infringement.

Let the good times roll and stay clear of copyright infringement. “Laissez les bons temps rouler”!! (the “Cajun in your pocket” toy says this too.)

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

See also: http://www.emanation.com/products/cajun-in-your-pocket and Emanation Inc. v. Zomba Recording, Inc., 72 Fed. Appx. 187 (5th Cir. La. 2003). Emanation Inc. v. Zomba Recording, Inc., 72 Fed. Appx. 187 (5th Cir. La. 2003).

FAME is a game changer for Trademarks

Registering trademarks with the USPTO helps strengthen brands by giving brand owners exclusive use rights as well as defensive powers to block similar marks.  FAMOUS trademarks are stronger and have broader defensive blocking powers against other trademarks.  One example of a strong, famous trademark is APPLE.

The iconic Apple logo is widely recognized by consumers and this FAME grants Apple Inc. the power to block the trademark registrations of other logos that include a confusing similar apple graphic.   Defining what is a confusingly similar trademark… is the million dollar question.  A few years ago APPLE challenged a “Green NYC” apple logo.

Would you have been confused by the two marks?  Would you have thought they were from the same corporate or municipal source?  (Take a look and see what you think.   If this logo had a leaf on the stem… would you be confused? http://www.nyc.gov/html/greenyc/html/home/home.shtml vs. http://www.apple.com/)  The end of the story, is that NYC had to remove a leaf from the stem of its “Green NYC” apple logo… and then it was granted trademark registration.

How about them apples….

BY: Vanessa Kaster, Esq.

For more personalized legal services contact me at vk@kasterlegal.com

For more information see: http://www.bloomberg.com/apps/news?pid=newsarchive&sid=aS6kWpRRWe9U&refer=us and USPTO Serial number 77975167 and Registration number 3753302.

Little Bo Peep and Her Sheep Flambe

Creativity abounds as household items are incorporated into Halloween costumes; however, use common sense and pay attention to intended uses and warnings on everyday items that you use in your costumes.  Courts are not always very sympathetic to costume-related injuries because, products are often used in ways that were not expressly intended when incorporated into costumes.

For example, did you know that some cotton balls are highly flammable?  Little Bo Peep and her husband (who unfortunately for him was dressed as a sheep at a Halloween party) discovered this in a matter of seconds when he lit a cigarette and was quickly engulfed in flames.  The sheep costume was made by gluing cotton balls all over a pair of long underwear (from his head to ankles)… and neither Little Bo Peep nor her husband-sheep had any idea how quickly cotton balls would burn if caught on fire.

Ultimately the court held that making a sheep costume with cotton balls was outside of the intended, medicinal uses of the product and therefore a failure to warn was not the proximate cause of the man’s injury.

[an intellectually property law post script relating to costumes… is that original costumes, like the elaborate feather costumes and headdresses worn by Mardi Gras Indians are eligible for copyright… as sculpture and works of art.  This applies to elaborate galactic, warrior costumes... like Stormtroopers too.]

This case is: Ferlito v. Johnson & Johnson, 1992 U.S. App. LEXIS 34781; see also, Case Law From the Crypt: The Law of Halloween by D. Moar in the October, 2011 issue of the NYSB Journal.

BY: Vanessa Kaster, Esq.

For more personalized legal services contact me at vk@kasterlegal.com

Making ‘Stormtroopers’ in your basement? (gotta look at that basement)

In a galaxy not so far away… (the United Kingdom under the rule of HRH)… the original designer and prop maker of the Star Wars stormtrooper costume continues to make replicas of the iconic stormtrooper in his basement and sell them over the internet.  This basement stormtrooper-production-line led to a legal battle in the UK’s highest court.  Lucasfilms filed a lawsuit for copyright violation, in the hopes of shutting down the basement production.

The court ruled in favor of the basement stormtrooper-production since UK copyright law offers a short term of copyright protection for ‘props’ and that period of protection had expired.  (Interestingly, the same stormtrooper costumes are covered by a much longer term of copyright protection in the UK if the court had found them to be works of sculpture instead of classified as props.  Here in United States, if the stormtroopers were being produced in a basement on US soil… it is likely that Lucasfilms would have prevailed because, the US copyright law offers a much longer term of copyright protection regardless of the classification of the copyrightable work as a sculpture or prop.)  Since the stormtrooper costumes are still under copyright protection in the US, damages may have to be paid to Lucasfilms for any costumes that were sold here in the US.

Copyright laws and the term of copyright protection vary from country to country.

(I gotta tell ya, that I visited the UK courtroom while this case was being tried and there were stormtroopers set up all over the place.  The combination of wigs, robes, courtroom formalities and stormtroopers felt like another dimension… straight out of Star Wars.)

The case is: Lucasfilm v. Ainsworth, No. [2011] UKSC 39, U.K. Supreme Court.  See also, http://www.supremecourt.gov.uk/news/latest-judgments.html.

BY: Vanessa Kaster, Esq.

For more personalized legal services contact me at vk@kasterlegal.com